Removal of Surface Treatment
From Design Drawings Permitted
In view of the decision of In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788
(Fed. Cir. 1998), the Patent and Trademark Office (Office) will,
effective immediately, permit applicants in design applications to
remove surface treatment from the drawings without a specific disclaimer
in the original application papers if it is clear from the application
that applicants were in possession of the underlying design without the
surface treatment at the time the application was filed.
Background: Prior to Daniels, the Design Group (2900) considered surface
indicia or treatment (color or contrast, graphic or written indicia,
including identifying indicia of a proprietary nature or surface
ornamentation on an article) that does not obscure the underlying design
to be an integral part of the design unless initially disclaimed. Thus,
without an initial disclaimer, later submitted formal drawings or
photographs were required to depict all the surface indicia, including
color, present in the original drawings. See 37 CFR 1.152(b)(1) and
(b)(2), amended effective December 1, 1997.
New Office Policy: The Office intends to amend 37 CFR 1.152(b)(1 ) and
(b)(2) in an upcoming rules change to better conform to the Daniels
decision. Effective immediately, those portions of 37 CFR 1.152(b)(1 )
and (b)(2) with respect to a specifiic disclaimer which are in conflict
with the Daniels decision will be sua sponte waived by the Office. Thus,
applicants will be permitted to remove surface indicia or treatment
(e.g., color ornamentation, decoration, or pattern) shown in a drawing
or photograph of a design without such removal being treated as new
matter, provided that the surface indicia does not obscure or override
the underlying design. Removing surface indicia by amendment in the
formal drawings may be done by either: 1) deleting the surface indicia
entirely; or 2) converting the solid line showing of surface indicia to
broken lines for illustrative purposes only.
As part of implementing the current change, any outstanding rejection
that does not conform to this new Office policy will be, upon request,
withdrawn. Applicants must, therefore, timely reply to such rejection
with a request that it be withdrawn, even if it is the only rejection
made.
Any general questions relating to this notice should be directed to
Joseph Narcavage, Special Program Law Office, at (703) 305-9285. Any
specific questions relating to the implementation of the OG Notice
should be directed to James Gandy, Supervisory Patent Examiner, TC
1600/2900, at (703) 305-3290.
November 6, 1998 STEPHEN G. KUNIN
Deputy Assistant Commissioner
for Patent Policy and Projects